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`I'm joined today by my colleagues from Latham & Watkins,
`Larry Gotts.
`MR. GOTTS: Good morning, Your Honor.
`MR. FLYNN: David Kowalski.
`MR. KOWALSKI: Good morning, Your Honor.
`MR. FLYNN: Joe Akalski.
`MR. AKALSKI: Good morning, Your Honor.
`MR. FLYNN: Marc Zubick.
`MR. ZUBICK: Good morning, Your Honor.
`MR. FLYNN: And Susan Tull.
`MS. TULL: Good morning, Your Honor.
`THE COURT: So I know Mr. Gotts and Jethro Tull,
`but that's it. So I did see your letter in response to my
`order, and basically my interpretation of the letter is that
`some things you've agreed to or agreed to while reserving
`rights, and so I don't really expect to discuss them today.
`But everything that you want to discuss, I'm perfectly
`willing to listen to. And unless you have some other idea,
`we might as well just go through them in the order in which
`they're listed.
`Is that what the parties are expecting?
`MR. GOTTS: Yes, Your Honor.
`MR. VEVERKA: Yes, Your Honor. Thank you.
`THE COURT: So mark-up language. Peloton wanted
`to seek clarification about something.
`
` IN THE UNITED STATES DISTRICT COURT
` FOR THE DISTRICT OF DELAWARE
`
`PELOTON INTERACTIVE, INC., )
` )
` Plaintiff and )
` Counter-Defendant, )
` ) C.A. No. 20-662(RGA)
`v. )
` )
`ICON HEALTH & FITNESS, INC., )
` )
` Defendant and )
` Counterclaimant. )
`
` J. Caleb Boggs Courthouse
` 844 North King Street
` Wilmington, Delaware
` Friday, June 25, 2021
` 9:05 a.m.
` Markman Hearing
`
`BEFORE: THE HONORABLE RICHARD G. ANDREWS, U.S.D.C.J.
`
`APPEARANCES:
` MORRIS NICHOLS ARSHT & TUNNELL, LLP
` BY: MICHAEL J. FLYNN, ESQUIRE
` -and-
`
` LATHAM & WATKINS LLP
` BY: LAWRENCE J. GOTTS, ESQUIRE
` BY: MARC N. ZUBICK, ESQUIRE
` BY: SUSAN Y. TULL, ESQUIRE
` BY: DAVID F. KOWALSKI, ESQUIRE
` BY: JOSEPH C. AKALSKI, ESQUIRE
`
` For the Plaintiff and
` Counter-Defendant
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`APPEARANCES CONTINUED:
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` RICHARDS LAYTON & FINGER LLP
` BY: CHRISTINE D. HAYNES, ESQUIRE
`
` -and-
`
` MASCHOFF BRENNAN
` BY: STERLING A. BRENNAN, ESQUIRE
` BY: C.J. VEVERKA, ESQUIRE
` BY: RAY NELSON, ESQUIRE
` BY: DAVID R. WRIGHT, ESQUIRE
` BY: TAYLOR J. WRIGHT, ESQUIRE
`
` For the Defendant and
` Counterclaimant
` ICON Health & Fitness, Inc.
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`So what is that?
`MR. GOTTS: That is, Your Honor, the reference
`to tags in the proposed constructions.
`THE COURT: Yes.
`MR. GOTTS: And what I'd like to do, Your Honor,
`with the Court's indulgence, is talk a little bit about the
`significance of that and then walk through the evidence
`because we believe it has significance, but indeed, does
`need to have more meat on the bones. And what a tag is,
`because if we simply use that term, it's going to leave it
`for construing of the construction by the experts and the
`jury. And we think there's a lot more to it in the context
`of how it's understood in the context of the mark-up
`language.
`
`THE COURT: So, okay. I will say that when I
`read this briefing on June 18th, so I have notes and, of
`course, I thought about it before I issued the Order, but
`there's a little pause here because I actually hadn't
`thought the tags part was controversial. But go ahead.
`MR. GOTTS: Yes, Your Honor. And I don't think
`it ought to be controversial, although I think the jury is
`not going to understand what a tag is in the context of a
`tag mark-up. Peloton, as you know, Your Honor, had a
`proposed construction.
`THE COURT: But I mean, I guess this is the
`06/28/2021 06:40:47 PM
`
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` *** PROCEEDINGS ***
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`DEPUTY CLERK: All rise.
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`THE COURT: All right. Please be seated. So
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`this is the Markman in Peloton vs. ICON, Number 20-662. And
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`this is ICON's patents and its counterclaims.
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`And so ICON, Ms. Haynes, good morning.
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`MS. HAYNES: Good morning, Your Honor.
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`Christine Haynes from Richards Layton & Finger on behalf of
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`ICON. With me today, I have my co-counsel from Maschoff
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`Brennan, Sterling Brennan, Ray Nelson, C.J. Veverka, David
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`Wright, Taylor Wright, and also with us is my client from
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`ICON, Everett Smith, the general counsel.
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`THE COURT: All right. Thank you, Ms. Haynes.
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`Mr. Flynn.
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`MR. FLYNN: Good morning, Your Honor. Michael
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`Flynn of Morris Nichols on behalf of Peloton Interactive.
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`Case 1:20-cv-00662-RGA Document 142-1 Filed 09/13/21 Page 3 of 145 PageID #: 4470
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`start. Isn't tags, so to speak, a well-known term of art?
`The specification of the '016 patent actually
`MR. GOTTS: It is a well-known term of art for
`says very little about any of this in one regard. It
`mark-up language, but it has a very definite format and
`doesn't -- the only place it even uses the language mark-up
`understanding of what a tag is. Whereas in the -- just to
`language is in the title Extensible Mark-Up Language which
`understand the nature of the dispute, there's something
`is XML. It doesn't sort of talk about all mark-up languages
`called JSON, which is what Peloton practices, and it doesn't
`or anything else, it talks about XML. And then it spells it
`have tags, as we would describe it, right. But the
`out, extensible mark-up language. It doesn't use the word
`expectation is that ICON will try to point to anything and
`tags anywhere.
`call it a tag, whereas tags means something quite specific,
`But what it does do is it gives an example of an
`as I'll explain in the context of a mark-up language.
`XML example at Column 6, I believe, of the patent, Lines 46
`THE COURT: Okay.
`through 51. And you'll see, this is an exemplar of XML code
`MR. GOTTS: So that is why it's important and
`that has these tags we're talking about. And what the tags
`because, otherwise, what we're going to do is have a
`are, see where it says, for example, TimeStamp on the first
`situation where the experts or the jury, even worse, trying
`line, that's telling you that the data in between these two
`to sort of interpret the construction and construe the
`tags is the time stamp. That would be a representation of
`construction which is, I think, the thing we're trying to
`the time stamp. And the tags themselves are always set off
`avoid have happen here.
`with these angle brackets and the explanation of either what
`So Your Honor, the Court's proposed
`the tag is, what the data is, or what to do with that data
`construction, a computer language that identifies data with
`in some instances, some explanation of why we're putting
`tags, as Your Honor may recall, Peloton had a construction
`that there. Right. And it's always surrounded by these two
`which tried to give examples and also put a little more
`tags. This is the nature of XML, but we'll see it's
`definition around what a tag is, and how they're used, and
`actually the nature of mark-up languages in general.
`how many of them there are, and so forth, and so on. We
`So tags are, indeed, when you ask -- you asked
`understand Your Honor's going in the direction of not using
`the question earlier, isn't that well known? They are well
`those exemplars, but I think there still needs to be more
`known, but they're well known to be this. It's not a comma,
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`or an apostrophe, or a quote, or something else. This is
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`what a tag is and they -- and tags surround the data. And
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`that's XML, and that's mark-up language. That's just what
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`mark-up languages are and what they look like.
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`So the patent tells us -- it doesn't describe
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`it. This is really all we get in the patent, this and that
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`one instance where it talks about XML and use of mark-up
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`language. This is what we get. But interestingly enough,
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`it's also quite consistent with both the extrinsic and
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`intrinsic evidence as to what a mark-up language is.
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`THE COURT: Actually, let me just interrupt you
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`for a second --
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`MR. GOTTS: Yeah.
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`THE COURT: -- because it occurs to me I don't
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`know where you're going. What is it that you would want me
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`to do, change --
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`MR. GOTTS: Okay.
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`THE COURT: -- clarify, so that I kind of have
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`in mind what the end goal is here?
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`MR. GOTTS: Let's go to the punch line. If we
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`could go to the last slide. I think it's the last slide.
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`And I'm going to -- I'd like to not lose the opportunity to
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`explain to you why we get there.
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`THE COURT: Yeah, okay. So you're saying tags
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`of the very particular nature that you were just
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`The claims were amended to add in a particular
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`mark-up language. So mark-up language is something -- not
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`only is it important, but it's sort of broader than any sort
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`of transmittable data format. And ultimately, the examiner
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`allowed the claims and, in part, based on the changes to the
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`claims made regarding mark-up language. I only say that
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`because whatever we have here has to be something broader
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`than a transmittable data format. Right.
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`I'm sorry, narrower transmittable data format.
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`Thank you.
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`So if we can go to the next slide, Dave.
`06/28/2021 06:40:47 PM
`
`work done on that.
`So if I could, before I go, Your Honor, into the
`intrinsic and extrinsic record that we think very clearly
`tells us what a tag is, I just want to spend just a moment
`about how we got to where we are in the claim because I
`think it could be relevant.
`So if we could go to the next slide, Dave.
`The original filed claims all did not have this
`mark-up language in it at all. In fact, they had something
`called a particular transmittable data format that's in the
`far left corner of our slide right there. It was in
`response to various rejections and the like, including based
`on this Agranat reference, which I will speak about in a
`moment.
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`looking at the intrinsic record would have, the patent would
`have.
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`demonstrating?
`MR. GOTTS: Right. And you'll see why that is
`as I go through all the evidence.
`THE COURT: Okay. All right. That's all I
`really wanted to know is what it was we were trying to get
`to.
`
`MR. GOTTS: So what we would do is attach right
`after your construction, Your Honor, you know, a little more
`meat on the bones, tags are around the text, and they
`consist of angle bracket delimiters and tag names. So it's
`basically just telling us what a tag is.
`So should we go back?
`THE COURT: Yes, yes.
`MR. GOTTS: Okay. Thanks.
`So let's now talk -- there really is a wealth
`of -- there's good intrinsic evidence, in addition to what I
`already pointed out in the specification, right. Basically
`the exemplar of XML. But there's also other intrinsic
`evidence, and there's a wealth of extrinsic evidence. And
`I'll just say there's actually no evidence that supports
`something as broad as mark-up language as just as tags or
`identifies data with tags. That would be insufficient and
`not supported.
`So the first item of intrinsic evidence is what
`I already alluded to earlier. There was a prior art
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`If we could go to the next.
`Now, Your Honor, this isn't the first time
`courts have had to look at, you know, or discuss, or at
`least consider what mark-up languages are. In fact, in the
`i4i case, the Federal Circuit has -- and I'm not at all
`suggesting this is binding precedent or anything else for
`the Court, but I think it's instructive -- the Federal
`Circuit has said that -- explained that mark-up languages
`tell a computer how texts should be processed, just as I
`said, by inserting tags around the text just like in the
`patent there, tags on either side, and they give a computer
`information and so forth. And then it goes on to say, each
`tag consists of a delimiter. The delimiter is the angle
`brackets and a tag name which is, for example, the time
`stamp there. And as we said, that surrounds the data or the
`information.
`And then it goes on to give an example using, I
`believe, what is the address of the Federal Circuit address,
`717 Madison Place address where -- so address is the tag
`name and the angle brackets there are the delimiters. Well,
`once again, entirely consistent, you know, almost -- you
`know, very much affirming way to Agranat, very much
`consistent to the intrinsic record of the patent itself.
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`So if we can go on to the next, there we also
`have in the record here, Techterms, which is a website which
`talks about tags and the like. And it also explains the
`tags are the basic formatting tool in HTML and other mark-up
`languages, such as XML. And it explains, once again, the
`data should be inside the tag, and the table, and it's
`closed with another tag. And as you'll see, it's an
`exemplar again. Here it, once again, lines up identically
`with the '016 patent.
`Getting to the point here that when we're
`talking mark-up language, those in the computer science
`field know that when we talk about tags, we're talking about
`something which is quite specific and directed to mark-up
`languages and not to any old thing that you want to sort of
`call out and call a tag. That may be something, but it's
`not a mark-up language tag.
`Next slide, please. We also have the
`declaration of Mr. Kevin Almeroth, our expert.
`THE COURT: I really don't care about
`declarations.
`MR. GOTTS: Okay. Fair enough. But I would
`like to skip next to the evidence of their inventor expert
`for a different reason, if I could, Your Honor. We can skip
`that.
`
`THE COURT: All right. I don't care about
`06/28/2021 06:40:47 PM
`
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`rejection over this Agranat patent, prior art that cited in
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`the prosecution history is the -- is intrinsic evidence.
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`And here, in fact, this is the only intrinsic evidence that
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`tells you what a mark-up language is.
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`And in Agranat, they actually gave an express
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`definition of a mark-up language. And it goes as markup
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`languages are computer languages which describe how to
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`display, print, et cetera. And as I mentioned earlier,
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`what's inside those delimiters could be any number of
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`instructions as to what the data is and that's what it's
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`saying here.
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`A text document and a device-independent way,
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`and that's what XML is, it allows you to sort of talk to
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`any -- you know, anywhere, use this mark-up language and
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`know how to create these documents or to format this
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`information. And it says a description takes the form of
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`textual tags indicating a format to be applied or other
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`action to be taken relative to the document text.
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`Then it goes on to say, tags are enclosed in
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`angle brackets. And I've highlighted that, and then it
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`shows the angle brackets, and they indicate how the document
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`is structured and so forth. So you'll see Agranat is
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`entirely consistent with what the '016 patent shows as tags
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`in the context of a mark-up language. And that's intrinsic
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`evidence, and it's the only intrinsic evidence that one
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`THE COURT: Well, these are oldies, but goodies.
`Okay. Well, all right.
`I missed all of this discussion and, you know, I
`remember Agranat in the briefing, and I guess I actually
`remember the inventor business, too. Does somebody actually
`have the Microsoft technical dictionary from, you know, 1999
`saying, Here's the definition of a tag?
`MR. GOTTS: I don't believe we have that, Your
`
`Honor.
`
`THE COURT: I was just wondering --
`MR. GOTTS: Yeah.
`THE COURT: -- because you know -- well, in any
`event, why don't I hear from the other side.
`MR. GOTTS: Okay. Thank you, Your Honor.
`MR. BRENNAN: Thank you, Your Honor. Sterling
`
`Brennan.
`
`THE COURT: Yeah. I'm starting to get your
`name, but thank you.
`MR. BRENNAN: That's fine. Thank you, Your
`
`Honor.
`
`inventors either, but --
`MR. GOTTS: I know.
`THE COURT: -- but go ahead.
`MR. GOTTS: I know. That was the first point I
`was going to make. I know the Court doesn't care about
`inventors or even very much about expert declarations, but
`in the case of Mr. Paolini, I think it is relevant that
`their own expert and their -- who's their expert and
`inventor disagreed with their construction. I think it's
`one thing to say, I've got a self-serving declaration of the
`experts, and they all wash out and everything else. But
`when they disagree and he says he thinks that their
`construction, which was essentially the Court's
`construction, is omitting things and, therefore, inaccurate.
`Now, he may have a whole host of other reasons.
`We tried to get that. He said it would have to embody the
`whole 15 paragraphs of my declaration, and it's a messy
`concept. You know, the point is whatever he thinks it is,
`he thinks their construction is wrong which, by the way, is
`essentially the Court's construction. I think that's
`relevant.
`
`THE COURT: And where did he get his law degree
`
`from?
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`MR. GOTTS: He doesn't have a law degree, but he
`certainly has a technical degree so he's someone presumably
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`skilled in the art. So he understands. I think, this is --
`I think we'd all agree this is an issue that is sort of a
`blend of law and technology. And I think for what it's
`worth, that's the only evidence they had, and he disagrees
`with them.
`
`Okay. So that's sort of where it leaves us. We
`have a wealth of intrinsic and extrinsic evidence telling us
`exactly what a tag is. The best they've got is their own
`guy who disagrees with their construction which is the
`construction the Court adopted.
`THE COURT: Okay.
`MR. GOTTS: And that's the lay of the land. I
`think that's -- so that, again, we've crafted a construction
`which there's no doubt it's correct. The only question is
`how much the Court really feels ought to be said here in
`light of the intrinsic and extrinsic evidence. This clearly
`is technically and factually correct. I don't think that's
`disputable based on the spec and the wealth of evidence we
`have here. We've aligned it up with the i4i which you could
`line up.
`
`THE COURT: What is the priority date of these
`
`patents?
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`MR. GOTTS: April 2000, Your Honor.
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`THE COURT: 2000?
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`MR. GOTTS: Yes.
`06/28/2021 06:40:47 PM
`
`Well, interestingly, if one were to look at the
`construction that was at least initially proposed by
`Peloton, it did not include the added language. Now, from
`my reading of what the Court has proposed is it has taken
`from Peloton's proposed construction and from ICON's and
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`essentially done a greatest hits compilation from the
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`essential terms of each.
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`THE COURT: Well, it is true, as you say, that
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`the original Peloton construction talked about corresponding
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`textual tags. So it's certainly moving beyond that.
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`So but, in any event, go ahead. Sorry.
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`MR. BRENNAN: So thank you. So in addition,
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`counsel presented to you, and we can put similar slides up
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`citing from the i4i vs. Microsoft case where the Federal
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`Circuit undertook to describe what a mark-up language is,
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`and that language did not undertake to define tags as is now
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`being proposed to the Court. This --
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`THE COURT: Well, so that's all true or, I
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`assume. And of course, while I don't care about inventors,
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`and I don't really care about experts, I do care about the
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`Federal Circuit. But even the Federal Circuit concedes that
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`just because they said something about a construction in one
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`case -- or, I guess i4i might even be the Supreme Court.
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`No, it's Federal Circuit -- you know, it's not binding in
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`another case.
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`MR. BRENNAN: Yes.
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`THE COURT: So but the same question I was
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`hinting at with Mr. Gotts, I mean, is there -- you know, my
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`impression is, honestly, that tags is a term that one would
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`expect experts to actually agree with what is or is not a
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`MR. BRENNAN: Well, we would agree, but so there
`could be transparency. I think we got a sense of this from
`Peloton's counsel, where they want to go with this, and the
`reason they're urging this much more limited narrow --
`THE COURT: Well, I get the JSON, whatever that
`is, probably doesn't have this kind of tag.
`MR. BRENNAN: Exactly.
`THE COURT: The question is, I guess, whether it
`has some other tag.
`MR. BRENNAN: That's the issue, Your Honor.
`THE COURT: So what other kind of tag are we
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`Case 1:20-cv-00662-RGA Document 142-1 Filed 09/13/21 Page 6 of 145 PageID #: 4473
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`tag, at least I would have expected. And just because the
`MR. BRENNAN: I think ultimately the dispute is
`jury doesn't know what a tag is until people, experts start
`going to focus on: Is JSON a mark-up language? Is JSON an
`saying something is or is not, you know, that's not a reason
`extensible mark-up language? And does it use tags? We
`for me to start trying to define tag, too.
`contend it does. But does it use a different nomenclature
`On the other hand, it does seem like I
`or method to delimit and does it signify tags using
`understand kind of probably what the dispute is, which I
`something other than angle brackets?
`will say is Peloton wants a very specific understanding of
`THE COURT: So is your understanding of a tag,
`tag. What I don't know is whether tag has a broader
`does it consist of a delimiter and a tag name?
`understanding to people of ordinary skill in the art because
`MR. BRENNAN: It does.
`I do think whatever the understanding -- you know, and I
`THE COURT: Okay.
`didn't understand Mr. Gotts to be saying something different
`MR. BRENNAN: And Your Honor, not only that, I
`that, you know, somebody's disclaimed or lexicographied tags
`think that's well understood. Back to the Court's original
`for this case. I think tags here just means whatever tags
`observation, should experts or persons of ordinary skill in
`means.
`the art understand that a mark-up language uses tags? Yes.
`What's the purpose of them, to serve as a delimiter? Yes.
`And does there have to be some sort of nomenclature or
`symbol to identify what that delimiter is? Yes.
`THE COURT: And so hold on a second,
`Mr. Brennan.
`Mr. Gotts, is it your understanding that down
`the road that that's going to be at least one of the points
`of dispute is your expert's going to say whatever their
`expert is saying is a delimiter is not a delimiter or maybe
`what their expert is saying is a tag name is not a tag name,
`though it seems to me you're focusing more on the delimiter.
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`I mean, is that what you were trying to avoid here is
`getting me to rule in your favor of what a delimiter is
`right now?
`
`MR. GOTTS: What I actually am trying to avoid
`is sort of putting some claim construction issues in the
`hands of the jury, but let me answer the question because I
`don't want you to think I'm dodging it. We certainly
`believe that absolutely critical is that there be delimiters
`around textual tags which gives these instructions on either
`side. It's always the case with both, just as we see here
`now. What I do think we could leave for the experts to
`decide later on is do delimiters need to be angle brackets
`because I think, as you'll recall, we had corresponding
`textual tags in our -- that corresponding was intended to
`explain the notion that there's two of them. There's one on
`either side.
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`either side, and they give you delimiters, and they give you
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`I think -- we think they also always have angle
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`down the road and let the experts opine on something, and I
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`think that's one of the objections here, that's one of the
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`talking about?
`MR. BRENNAN: There could be other symbols that
`could be used.
`THE COURT: In other words, instead of angle
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`brackets --
`
`MR. BRENNAN: Angle brackets.
`THE COURT: -- they could use asterisks.
`MR. BRENNAN: Quotation marks. There could be
`other delimiters, and that's why the, I think, well
`understood and accepted definition suggests -- again, I
`understand it's not binding, but I think the Federal Circuit
`did suggest that each tag consists of a delimiter and tag
`name.
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`THE COURT: Ah. And so that's, you would say,
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`even if I don't care about the Federal Circuit -- you didn't
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`say that -- that even if the Federal Circuit is not binding
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`on me, you're saying it helps you, not them?
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`MR. BRENNAN: It does. It does.
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`THE COURT: Because they give a broader
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`definition, and I take it that JSON, which I kind of recall
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`from the preliminary injunction or something --
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`MR. BRENNAN: Yes.
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`THE COURT: -- that JSON has a delimiter and a
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`tag name, at least in your view, just a different delimiter
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`and a different tag name.
`5 of 26 sheets
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`

`

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`Case 1:20-cv-00662-RGA Document 142-1 Filed 09/13/21 Page 7 of 145 PageID #: 4474
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`surrounding tag names, surrounding tags that have tag names,
`of this patent and, you know, tell me what they say about
`and delimiters.
`what a tag is. You know, my inclination is that it's a
`THE COURT: Surrounding delimiters.
`broader, certainly broader term than what you started with,
`MR. GOTTS: But that bracket, the information,
`Mr. Gotts. And my inclination is that it is a well-known
`correct. And then what I don't want to be on record as
`term of art. And I suspect it's, as I've said, broader than
`saying is we don't require angle brackets because I believe
`what you're saying. And I expect there is a need for
`you do. But I think if we were trying to say how far do we
`probably a delimiter and a tag name for every tag, but the
`go, to me, the issue, Your Honor, how far do we go in claim
`argument is over what's a delimiter, maybe what's a tag
`construction and how far do we go when we let the experts
`name, but at least what's a delimiter. And that's not claim
`tell us what they really think here down the road, somewhere
`construction, that's something else.
`you've got to draw the line. I think stopping at tags alone
`MR. GOTTS: If I could just make one point of
`doesn't do it. I think that just doesn't do it. So we
`clarification, Your Honor. Tags, of course, is not even the
`could live with that.
`term they've construed. It's mark-up language. So it
`THE COURT: All right. Just as a matter of
`strikes me that the right -- the inquiry perhaps is what
`curiosity, Mr. Brennan, do you agree? Because I notice here
`you're asking for is technical documents which describe what
`it says each tag consists of a delimiter and tag name. Are
`a tag is in the context of a mark-up language. Right?
`you suggesting that a delimiter is something that only
`THE COURT: Well, certainly that's the context
`appears on one side of the tag name or could be?
`we're talking about, and I don't know whether tag has usages
`MR. BRENNAN: It could be, Your Honor. That's
`in other contexts or not. So I leave it to you to go look
`the crux of the issue is, again, there's an attempt to cabin
`for stuff, but it would be helpful to me if you went and,
`the description so tightly as to avoid or to delimit, in
`you know, surveyed whatever you can find and just sent me,
`their case, a whole range of computer languages that will be
`you know, by like, say, but you can agree on something
`well understood to be mark-up languages that meet the
`different, Friday of next week, you know, a letter with some
`Court's construction. And so the clear effort being made
`attachments saying, you know, here's what it meant to a
`here is to ask the Court, invite the Court to give such a
`person of ordinary skill in the art in the context of
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`narrow construction as to guide into a way that would limit
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`THE COURT: Sorry.
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`MR. BRENNAN: So --
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`THE COURT: And I'm sorry, Mr. Brennan. You may
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`have already said this, but I think you have already said
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`this, but your view is what's a tag or what is or is not a
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`tag, that's basically the factual question for an expert
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`because the tag is a well-known term of art, and it's used
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`in its ordinary sense in these patents?
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`MR. BRENNAN: Yes, and I think there will be a
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`dispute among the experts. It's going to be a factual
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`dispute. Their expert has given a very narrow one. We
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`didn't attempt to bring one. We're sensitive to the Court's
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`feeling about this. There's all sorts of deposition
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`testimony we could have come with today, but that's for
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`another time and another place.
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`But this is really an attempt, as I said, to so
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`narrowly construe tags as to eliminate the ability for
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`experts and others to present the factual issue as to what a
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`tag is as understood in the art.
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`THE COURT: All right. So I think in the
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`interest of time, we should move on. What I would like is
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`for the parties to, you know, some time next week go and
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`06/28/2021 06:40:47 PM
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`THE COURT: All right. So I believe the next
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`displaying in the first of the two patents. And I guess
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`while they're related, they are separate.
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`So in any event, I guess probably ICON should go
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`first on this.
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`MR. BRENNAN: Yes. Do you mind if I just
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`approach to push the button?
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`THE COURT: Yes, yes.
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`MR. BRENNAN: I hope I can succeed at least at
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`this. There we go.
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`So Your Honor, it's my task, knowing that the
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`Court is well familiar with the limitations on
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`mean-plus-function claiming and, of course, we've read the
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`mark-up languages and, you know, see these sources.
`But one thing I don't want is any deposition
`testimony or any experts, you know, just you know, the page
`showing the dictionary or existed before the priority date
`and whatever the definition is that's in it. I'm sure
`there's -- well, I think it would be helpful.
`MR. GOTTS: Okay. So Your Honor, we can send
`our own letters. I think that makes more sense; right?
`THE COURT: Yes, yes, yes.
`MR. GOTTS: Okay. Thank you very much, Your
`
`Honor.
`
`

`

`MR. BRENNAN: No doubt.
`THE COURT: -- you know, my at least impression
`at the time, which maybe is not morphed, but developed over
`the years, and what I think it is is when you have a claim
`and it has kind of generic descriptions of things that
`computers do as part of a claim, a means-plus-function-type
`claim, you know, that's fine because generic things are what
`computers do. The more you get to a specific thing that it
`does, you know, then you're into, well, you need some
`programming to do it.
`And there's a later case called, either I think
`called EON that goes into that. And so at least what I was
`thinking when I read this is this wasn't just generic
`re